WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dragon Bleu, SAS v. G. Martel
Case No. D2016-0494
1. The Parties
The Complainant is Dragon Bleu, SAS of Rungis, France, represented by NextMarq, France.
The Respondent is G. Martel of Béziers, France, represented by John Berryhill, Ph.d., Esq., United States of America, (“United States”).
2. The Domain Name and Registrar
The disputed domain name <dragonbleu.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint in French was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2016. On March 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and stating that English was the language of the Registration Agreement for the disputed domain name. The Center sent an email communication to the Parties on March 15, 2016, requesting that the Complainant provide either (1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in French; or (2) to submit the Complaint translated into English; or (3) to submit a request for French to be the language of the administrative proceeding. The Respondent was also invited to make submissions in this regard. The Complainant filed an amended Complaint in English on March 16, 2016. On March 19, 2016, the Respondent filed a request that English be the language of the administrative proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2016. On April 8, 2016, the Respondent requested that the due date for submission of the Response be extended in accordance with paragraph 5(b) of the Rules. The due date for Response was extended accordingly to April 15, 2016. The Response was filed with the Center April 15, 2016.
The Center appointed Luca Barbero, David H. Bernstein and Warwick A. Rothnie as panelists in this matter on April 29, 2016. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of the French trademark Registration No. 043299091 for DRAGON BLEU (figurative mark), registered on June 17, 2004, for goods and services in classes 25, 35 and 41; and of the Community Trade Mark Registration No. 011562551 for DRAGON BLEU (word mark), registered on July 3, 2013, for goods and services in classes 25, 35 and 41.
The Complainant is the owner of the domain name <dragonbleu.fr>, registered on May 24, 2004.
The disputed domain name <dragonbleu.com> was registered on May 29, 2006, and is pointed to a landing page with sponsored links mainly related to the dictionary meaning of “dragons” and “blue dragons” with links to fantasy-related websites.
5. Parties’ Contentions
The Complainant contends that the disputed domain name, registered after the filing and registration of its French trademark registration, is identical to its trademark DRAGON BLEU.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name because:
- Before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
- The Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights, given the fact that its owner always pointed it to a parking page displaying promotional and advertising links;
- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Respondent has set up promotional and advertising links with the intent to divert consumers for commercial gain or to tarnish the trademark or service mark at issue.
With reference to the bad faith requirement, the Complainant states that, by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location, since the Respondent is trying to take unfair advantage of advertising investments made by the Complainant by displaying the slogan “dragonbleu.com: The Leading Dragon Site on the Net”.
The Respondent indicated that it is a French software developer with a longstanding business in game development and that it has maintained several animal and fantasy themed domain names for prospective use in game releases.
The Respondent asserts that this proceeding involves the phrase “blue dragon”, which is used to advertise fantasy literature, while the Complainant asserts limited rights in a non-exclusive phrase as a mark for martial arts clothing, goods for which the disputed domain name has not been used.
The Respondent highlights that the Complainant has not described its business beyond presenting its trademark certificates, and underlines that the Complainant is a martial arts sportswear retailer and martial arts promoter, as shown in Annex A to the Response and on the Complainant’s website at “www.dragronbleu.fr”.
As to the trademark registrations the Complainant relies upon, the Respondent contends that the Community Trade Mark Registration registered in 2013 for the word mark DRAGON BLEU is not of interest in relation to the bad faith and legitimate interests elements of the Policy since it postdates the registration of the disputed domain name. With reference to the French trademark registration for the figurative mark DRAGON BLEU, the Respondent asserts that:
i) the subject mark of that registration is a logo which conveys much more of a distinctive commercial impression than the mere textual component DRAGON BLEU; and
ii) apart from the graphic presentation shown in the Complainant’s mark, the phrase “dragon bleu” is by no means distinctive of the Complainant, since there are at least seven other DRAGON BLEU marks registered in France, to some three other entities.
Therefore, the Respondent concludes that the only chronologically-relevant evidence submitted by the Complainant shows that the Complainant has limited rights in a graphical logo which includes the non-distinctive text “dragon bleu”, and its rights are limited to the martial arts sportswear and promotion business in which the Complainant trades.
The Respondent claims to have a legitimate interest in connection with the disputed domain name since it corresponds to a combination of common words and is being used for purposes related to the meaning of the words.
The Respondent informs the Panel that it is also the proprietor of the domain name <minijeux.com> (“mini games”) and the owner of French Trademark Registration No. 3433687, filed on June 8, 2006 for MINIJEUX in International Classes 9, 35, 38 and 31.
The Respondent further explains that on its website “www.minijeux.com”, it publishes dozens of games of various genres and, over time, some of the more popular or interesting games have been spun off as mini sites of their own, such as <dressupgirl.com>. Therefore, from time to time, the Respondent has registered various domain names which the Respondent believed would have prospective utility as mini-sites for particular types of games, and, as children are particularly fascinated with games involving dinosaur and fantasy creatures, it also registered the disputed domain name besides other animal-thematic terms, including <mydinosaur.com>, <cheval.com>, <crazy-monkeys.com>, <monkeybazaar.com>, <mypoodle.com>, <pingouin.com>, <stupidmonkey.com>, <trickymonkey.com> and <epagneul.com>. The Respondent further states that, pending prospective future use, such domain names have been parked with a monetization service.
With specific reference to the use of the disputed domain name, the Respondent highlights that it is pointed to a website displaying links related to subjects as fantasy fiction, mythology, legends, griffins, in keeping with the concept of a blue dragon. Therefore, the Respondent concludes that its use of the disputed domain name is consistent with the ordinary connotations of the phrase at issue.
The Respondent also claims that, apart from the Complainant’s particular interest in martial arts clothing and fight promotion, the Complainant does not own a monopoly in the phrase “blue dragon”, since the blue dragon is, in fact, a venomous species of sea slug (Glaucus atlanticus), while, more broadly, the phrase “dragon bleu” is used for a wide variety of purposes, including as a trademark to identify a brand of vodka in France.
With reference to the bad faith requirement, the Respondent states that the Complainant did not in any way show how the Respondent’s registration and use of the disputed domain name is at all related to, or based upon, the Complainant’s trademark.
The Respondent also submits that, prior to launching this UDRP proceeding, the Complainant reached out to the Respondent to inquire about the disputed domain name, and in those communications, the Complainant did not assert or claim any rights in the disputed domain name, or any legal entitlement to the disputed domain name. The Respondent also states that, in replying to such communications, it expressly informed the Complainant of its business in game development and its reason for maintaining the disputed domain name. Therefore, the Respondent asserts, the Complainant could have easily verified the Respondent’s claims by, for example, searching the French trademark register and finding the Respondent’s mark MINIJEUX.
The Respondent furthermore states that the current use of the disputed domain name does not compete with, pass off as, or otherwise suggest anything having to do with the Complainant’s limited trademark rights in its mark or logo, and that the disputed domain name has been used for subject matter designated by the words in the disputed domain name itself, and not for purposes arising from the Complainant’s limited rights in its mark and logo in the field of martial arts clothing and related activities in that field.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a registered trademark for DRAGON BLEU, filed in the European Union in 2013, and a registered trademark for DRAGON BLEU and design, filed in France in 2004.
As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, is irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraphs 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
The Panel notes that the disputed domain name incorporates DRAGON BLEU in its entirety, with the mere addition of the generic Top-Level Domain suffix “.com”, which can be disregarded, being a mere technical requirement of registration without any particular relevance to the trademark in this matter.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to the word trademark DRAGON BLEU and confusingly similar to the figurative trademark DRAGON BLEU in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Because of the Panel’s findings below, it is not necessary to address the issue of whether the Respondent has rights or legitimate interests in the disputed domain name. However, the Panel does note that the Respondent has not made any showing of demonstrable preparations to use the disputed domain name in connection with a fantasy-themed game.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has not proven by a preponderance of the evidence that the Respondent was targeting the Complainant and its trademark DRAGON BLEU, or otherwise acting in bad faith towards the Complainant and its trademark, at the time of registration, or since then.
In order to try to demonstrate the Respondent’s bad faith, the Complainant merely relied on the Respondent’s redirection of the disputed domain name to a landing page with sponsored links and asserted that the Respondent intended to attract users to its website for commercial gain by causing confusion with the Complainant’s trademark.
However, the Panel’s review of the website published at the disputed domain name, as also highlighted by the screenshots submitted by the Complainant itself, shows that the links featured on the website do not target the Complainant or its competitors; rather, they are mainly related to the dictionary meaning of “dragons” and “blue dragons” with links to fantasy-related websites. Therefore, beyond conclusory allegations, the Complainant has not offered evidence that the use is not legitimate or that the registration and use is in bad faith. Furthermore, the Complainant has also failed to prove that the Respondent specifically registered the disputed domain name to target the Complainant’s trademark.
In view of the above and of the nature of the Complainant’s mark, which encompasses common dictionary words in a phrase in French (meaning “blue dragon”) not exclusively referable to the Complainant, the Panel finds that the Complainant has not proved that the Respondent has intended to take, or actually has taken, advantage of the disputed domain name for its significance as the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has not met its burden of proving that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
David H. Bernstein
Warwick A. Rothnie
Date: May 11, 2016